Amending claims during opposition proceedings

December 11, 2014

fire retardant

The Israel Patent Law 1967 allows corrections and ammendments. Scribal errors can be corrected at any time. Claims can be amended during prosecution, provided there is support for the amendments in the specfication. Under Sectons 65 and 66, on allowance, both during opposition proceedings and after the patent issues at patentee’s request, the scope of the claims may be amended provided the amendment is a narrowing of the claim coverage.

Albermarle Corporation filed Israel Patent Number 141905 titled “IMPROVED BROMINATED POLYSTYRENIC RESINS AND THEIR USE”. The invention relates to brominated polystyrenes as a fire retardant. The patent was filed in 1999 and was allowed and published for Opposition Purposes in 2009.

Tarkovot Bromium LTD opposed the patent, and the two companies have been battling back and forth for the past 5 years. Now Albermarle has requested to amend the claims. The proposed amendments is the addition of the underlined in the following claims:

“1. A brominated styrenic polymer that has ∆E solution value of said polymer if dissolved at the level of 10 wt% in chlorobenzene in the range of from about 3 to about 15,÷ an ionic bromine content of 2000 ppm or less, and at least two of the following additional characteristics:

  • a)
  • b)
  • c)

23. A brominated polystyrene characterized in that it has
An ionic bromine content of 1000 ppm or less;

 

  • A TGA temperature for 1% weight loss which is 340°C. or higher;
  • A chlorine content, if any, of less than about 100 ppm Cl;
  • A thermal stability in the Thermal Stability Test of 1500 ppm HBr or less;
  • An actual Mw which is within about 20% of its calculated theoretical Mw, the theoretical Mw being based upon the actual bromine content of the brominated styrenic polymer and the Mw of the styrenic polymer reactant used to produce the brominated styrenic polymer; and
  • Essentially no content of impurities selected from the group consisting of bromodichloroethane, dibromochloroethane, dibromodichloroethane, and tribromochloroethane.; and
  • ∆E solution color value of said polymer if dissolved at the level of 10 wt% in chlorobenzene in the range of from about 3 to about 15.

48. A composition which comprises a thermoplastic polymer having blended therewith at least a flame retardant amount of brominated styrenic polymer having, prior to blending, a total bromine content of about 50 wt% or more, a TGA temperature for 1% weight loss which is 340°C. or higher, and a chlorine content, if any, of less than about 700 ppm, and a ∆E solution color value of said polymer if dissolved at the level of 10 wt% in chlorobenzene in the range of from about 3 to about 15.

56. A composition which comprises a thermoplastic polymer having blended therewith at least a flame retardant amount of brominated styrenic polymer having, prior to blending, a total bromine content above about 50 wt%, and a thermal stability in the Thermal Stability Test of 200 ppm HBr or less, and a ∆E solution color value of said polymer if dissolved at the level of 10 wt% in chlorobenzene in the range of from about 3 to about 15.

 

 The parties agree that the additional phrase “∆E solution color value of said polymer if dissolved at the level of 10 wt% in chlorobenzene in the range of from about 3 to about 15″ is supported by the specfication.

 

 

Patent Office Interim Decision re Il 141905,  Torkovot Brome vs. Albermarle, Decision by Asa Kling, 12 November 2014.


LLM in Patent Law at Haifa finally on its way

December 11, 2014

haifa university law school

Back in June 2009, I reported on the ceremonial launch of Haifa University’s Masters in Law program in Patent Law – see here.

Recently fired Minister of Justice, Tzippy Livni, authorized the Commissioner of Patents to rule on whether such programs would provide a dispensation from patent office exams for would-be patent attorneys. In September of this year, I reported about the standards for obtaining dispensation from the theory exam for patent attorneys. See here and here. Essentially, so long as the degree covers all subject matter, such as trademarks, designs, basic foreign requirements, international treaties and procedural issues, the top 20% graduating will be entitled to a dispensation from the theory exam.

The long awaited Master’s Degree in Patent Law at Haifa University is finally on the Patent Prosecution Highway on its way. The first intake is this January. Some candidates have already signed up, but there are apparently places available.

It occurs to me, that someone interested back when the program was launched has had time to do the prerequisite science or engineering degree, and to have then done two years on the job training (hitmachut). No doubt however, there are some additional wannabe patent attorneys out there who think that this degree is the key to fame and fortune.

We wish the faculty and students every success with this endeavour!


European and Israel Patent Offices Sign a Bilateral PPH

December 10, 2014

pph

The European Patent Office (EPO) and the Israel Patent Office (IPO) have agreed a patent deal set to speed up examinations at both offices. Starting next month, the Patent Prosecution Highway (PPH) will allow applicants to request accelerated examination of a patent at either office provided the claims have been previously deemed acceptable by the other. The agreement was signed on December 4 by heads of both offices in Brussels, Belgium.

Apparently Asa Kling, director of the IPO, said the programme would “enhance co-operation between the offices” and further strengthen the economic and technological relations between Israel and Europe.

COMMENT
We see this as a great development, not least because Israel Applications may be accelerated fairly easily under a variety of routes including Section 17c of the Israel Patent Law 1967 and relevant patent office circulars. European Applications can linger in the queue for examination for quite a while, and incur annual maintenance fees. Then again, once allowed, a European patent has to be ratified and is then subject to renewal fees in the countries where it is ratified. The main thing is that this gives applicants choice and flexibility.


Israel Patent Office Publishes Summary of the Meeting between Practitioners and Examiners

December 10, 2014

nice to meet you

In an earlier post, I reported on a meeting held between the Examiners of the Trademark Department and practitioners.

The Patent Office has no published their official summary of the meeting. It may be found here: סיכום מפגש בוחנים-עורכי פטנטים בתחום סימני מסחר מיום 25.11.2014.

 

 

 


The Mattress Opposition Again

December 3, 2014

wisdom of solomon

Moshe and Anat Gabai have developed a mattress that they believe is useful in minimizing the occurrence of Sudden Infant Death Syndrome (SIDS) in children. On allowance, Aminach, a large Israel mattress manufacturer opposed the patent issuing.

The Applicants who were not represented, managed to overcome the prior art objections relating to novelty and non-obviousness, but were unable to prove that their mattress was effective. Consequently, Deputy Commissioner Ms Jacqueline Bracha ruled that the patent be cancelled as contravening Section 3 due to it lacking utility.

At the time, the Applicants did not have experimental evidence, but they teamed up with a scientist and generated some evidence that their mattress had some value in minimizing cot deaths.

The Applicants appealed to the District Court, however the District Court was not willing to examine this new evidence that wasn’t before the Patent Office.

Undeterred, and this time with professional assistance, the applicants appealed to the Supreme Court which established that in such circumstances, new evidence may be submitted. The case was referred back to the District Court which ruled that the evidence could be accepted and referred the case back to the Israel Patent Office.

Ms Bracha is prepared to accept the evidence provided it is relevant.

COMMENT

I can develop a persuasive theory that the mattress design allows dissipation of carbon dioxide and helps a baby that is lying face down to breath freely. I can think of several ways of demonstrating utility and have discovered a university researcher who is able to run some useful experiments. Unfortunately, the only really convincing evidence would be to conduct experiments with a statistically significant pool of identical twin babies, one twin sleeping on regular mattresses and the other on the Applicant’s mattress. I find the idea a little obnoxious and do not see that utility requires proof.

I think the Gabai’s deserve a patent for this, and am impressed with their tenaciousness.


Trade Dress, Likelihood of Confusion and Passing Off

November 26, 2014
Not that kind of can can...

Not that kind of can can…

XL Energy International Corp. is a leading manufacturer of energy drinks.

Here is one of their cans:

classic XL can

Cool Trade & Industry Co. have twice tried to get large shipments of empty beverage pans into the West Bank (also known as the Palestinian Authority and as Judea & Samaria) over the Allenby Bridge from Jordan. The shipments were each of 600,000 cans. In the first case, Judge Gideon Ginat of the Tel Aviv District Court ruled that there was a likelihood of confusion between the Cool Trade & Industry Co cans and those of XL and that the cans should be destroyed or sent back to Jordan, whereas in the second case, he ruled that there was no likelihood of confusion and the cans could enter the country.

The decision highlights the fine differences between competing products that are legitimate alternatives, and those that are considered as copies.

Background

XL Energy International Corp. produces the XL energy drink in its factory in Poland. The product is described as being a carbonated energy drink containing and caffeine and taurine that is manufactured by Tempo Drinks LTD. The company claims to have sold hundreds of millions of cans since introduced into Israel in 2004. Tempo distributes in Israel and Unipal General Trading Co. distributes in the areas under the control of the Palestinian Autonomy.

On 19 March 2013, following a first shipment of 600,000 HipHop cans labeled X2 in a red font that is arguably confusingly similar to the XL log, in blue cans with darker blue bubbles, the Customs Authority held up the shipment and Tempo and XL sued for trademark infringement, passing off and Unjust Enrichment. On 30 April 2014 a second shipment of 600,000 was held up by customs and XL sued again. This time the cans do not have the darker bubbles and the X2 logo is in black and silver instead of in red.

XL has two Israel trademarks. Israel TM No. 216718 and 217476 reproduced below.

TM 216718   TM 217476

They sued for trademark infringement under the Trademark Ordinance 1972 and for passing off under Section 1a of the trade laws 1999.

The first set of imported cans are shown here.

first shipment   first shiment 2

The second set of imported cans are show here:

second shiment   second shiment 2

XL claims to have sold 53,000,000 cans in the Palestinian Autonomy during the years 2009 to 2013 and to have spent half a million dollars in advertising. The parties agree that their products are similar, are aimed at a similar market and are distributed via similar retail outlets and may even be sold on the same shelf.

The plaintiff argued that customers do not have perfect recall and may see a Hip-Hop can and think that it is an XL can. Their witness argued that customers spend three seconds in front of the beverage refrigerator and that this type of purchase is an impulse purchase. There are differences between the two cans, but the overall impression provided by the two cans is the same. Judge Ginat accepted this argument based on the case-law, particularly 5454/02 Taam Teva (1988) Tovoli vs. Ambrosa.

The defendant argued that XL were not entitled to a monopoly on the X or on blue cans. They claimed that their cans had different markings, different text and different text colour.

Judge Ginat was convinced that the defendant was well aware of the XL cans trade-dress and appearance before they designed the Hip-Hop can. The issue is the likelihood of confusion of customers.

Citing an ECJ ruling: Court of Justice of the European Communities, JUDGMENT OF THE GENERAL COURT (Eighth Chamber),  Tresplain Investments v. OHIM (9 Dec 2010)

“Under the laws of the United Kingdom, it is for the court in question to determine whether it is likely that the relevant public will be deceived. Examples of specific instances of confusion may be useful, but the decision of the court does not depend solely or even primarily on the evaluation of such evidence (Parker’Knoll Ltd v Knoll International Ltd (1962) R.P.C. 265, 285, 291 HL).”

Judge Ginat noted that although the case was brought in the Tel Aviv court and was cans were intended for the Palestinian market. The issue here is likelihood of confusion by West Bank and Gazan Arabs. Unfortunately, neither party has provided any evidence regarding the market, such as consumer, wholesaler or retailer testimonies. The defendant’s evidence was mumbled and unclear. What is clear is that there are other energy drinks such as Blu.

Judge Ginat noted that in the UK, the courts were wary of giving monopolies based on colours, and cited the following precedents:

  • Sodastream Ltd. v Thorn Cascade Co. Ltd. [1982] RPC 459
  • Roche Products v. Berk [1973] R P C 461
  • Cadbury-Schwepps . The Pub Squash [1981] R P C 429, 460-461

He also noted that Judge Dr Binyamini had rejected Straus’ claims against Noga Icecream as them having a monopoly for gold containers. Furthermore, a single letter such as X is not protectable as a trademark. See E! Entertainment vs. Duetche telekom A.G. and Dr Seligsohn “Law of Trademarks and related Laws, Schocken 1972.

He then went on to cite Qualitex v. Jacobson Products 514 U.S. 159 (1995) and Christian Louboutin v. Yves Saint Laurent America (5 Sep. 2012) to the effect that a colour can serve as a trademark, i.e. as an indication of origin.

“The question of whether a color can be protected as a trademark or trade dress was finally resolved in 1995 by the Supreme Court’s decision in Qualitex, which involved a claim for trade dress protection of the green-gold color of a dry cleaning press pad. The question presented was “whether the [Lanham Act] permits the registration of a trademark that consists, purely and simply, of a color.”  Qualitex, 514 U.S. at 160–61 (citation omitted). Reversing a decision of the Ninth Circuit that had declared color per se ineligible for trademark protection, the Court observed that “it is difficult to find, in basic trademark objectives, a reason to disqualify absolutely the use of a color as a mark.” Id. at 164. The Court held, among other things, that it could find no “principled objection to the use of color as a mark in the important ‘functionality’ doctrine of trademark law.” Id. It concluded that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Id. at 166 (emphasis added).”

However, the US Supreme Court acknowledged an Aesthetic Functionality Doctrine under which monolistic rights in a colour will not be granted where doing so undermines the competitor’s ability to compete in the relevant market.

“In short, a mark is aesthetically functional, and therefore ineligible for protection under the Lanham Act, where protection of the mark significantly undermines competitors’ ability to compete in the relevant market. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995) (linking aesthetic functionality to availability of alternative designs for children’s fall-themed sweaters); Landscape 20 Forms, Inc., 70 F.3d at 253 (holding that “in order for a court to find a product design functional, it must first find that certain features of the design are essential to effective competition in a particular market”). In making this determination, courts must carefully weigh “the competitive benefits of protecting the source-identifying aspects” of a mark against the “competitive costs of precluding competitors from using the feature.” Fabrication Enters., Inc., 64 F.3d at 59. Finally, we note that a product feature’s successful source indication can sometimes be difficult to distinguish from the feature’s aesthetic function, if any. See, e.g., Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855, 857 (7th Cir. 2010) (noting that “[f]iguring out which designs [produce a benefit other than source identification] can be tricky”). Therefore, in determining whether a mark has an aesthetic function so as to preclude trademark protection, we take care to ensure that the mark’s very success in denoting (and promoting) its source does not itself defeat the markholder’s right to protect that mark. See Wallace Int’l Silversmiths, Inc., 916 F.2d at 80 (rejecting argument that “the commercial success of an aesthetic feature automatically destroys all of the originator’s trademark interest in it, notwithstanding the feature’s secondary meaning and the lack of any evidence that competitors cannot develop noninfringing, attractive patterns”).

Because aesthetic function and branding success can sometimes be difficult to distinguish, the aesthetic functionality analysis is highly fact-specific. In conducting this inquiry, courts must consider both the markholder’s right to enjoy the benefits of its effort to distinguish its product and the public’s right to the “vigorously competitive market[ ]” protected by the Lanham Act, which an overly broad trademark might hinder. Yurman Design, Inc., 262 F.3d at 115 (internal quotation mark omitted). In sum, courts must avoid jumping to the conclusion that an aesthetic feature is functional merely because it denotes the product’s desirable source. Cf. Pagliero, 198 F.2d at 343.”

In summary, whether or not a colour mark is recognized is highly case-specific. This made the judge’s ruling difficult as neither side provided evidence regarding other energy drinks available in territories administered by the Palestinian Authority.

Conclusion

In conclusion, Judge Ginat felt that despite the obvious and non-accidental similarities, where other manufacturers are selling energy drinks in blue cans and using an X, or bubbles, noone is entitled to a monopoly for these with regards to carbonated energy drinks.

Judge Ginat considered that the first shipment of cans is confusingly similar to XL’s beverage cans and so there was passing off. Furthermore, the cans were marked in ways that are very similar to identical to XL’s registered marks.  However, the second shipment, where the cans were clearly labeled Hip Hop Energy X2 the background blue is different and there is no likelihood of customer confusion nor is there trademark infringement.

Verdict

The Customs Authority shall see to the destruction of the first shipment and the defendant is forbidden from importing or distributing cans of the first design. The second shipment shall be released and the storage costs incurred will be born by the plaintiff.

If Cool Trade & Industry Co. do not pay the storage costs, Customs may deduct this from the deposit made by XL who may then sue Cool Trade & Industry Co. to recover the costs.

In the cirucumstances, no costs were awarded to either party and no fines were imposed. 

Civil Ruling 38108-03-13 and 26979-05-13 XL Energy International Corp. vs. Cool Trade & Industry Co., Tel Aviv District Court, Judge Gidon Ginat, 16 November 2014.

Comment 

Blu and Red Bull both have blue cans. The size of the energy drink cans is standard. In other words, there is a standard appearance that says energy drink. Judge Ginat considers that the customer will recognize Cool Trade & Industry Co.’s cans as being cans of energy drink, but won’t be confused into thinking that the cans are XLs.

There is a problem though. X2 looks remarkably like XL, and this seems intentional. A single letter cannot be registered as a trademark, but two characters can. West Bank Arabs might well see X2 as XL.

This ruling brings to mind Judge Agmon Gonen’s ruling concerning four stripe trainers that are inspired by Adidas’ designs but not really confusingly similar therewith. It also brings to mind the rather odd XO decision wherein two different companies selling energy drinks were allowed to register the same mark!

Finally, we remember fondly that whilst Pepsi was boycotting Israel due to pressure from Arab countries, a Galilean Arab manufactured and sold Pips Cola.

Pips Cola

The courts ruled that Pepsi had given up on their rights in Israel, and lacking other alternatives, Pepsi eventually bought the rights to Pips Cola from the manufacturer.


Ethics for Israel Patent Attorneys

November 23, 2014

ethical and legal

In what some may consider a welcome move, the Ministry of Justice has published a first draft version of a law that will govern the behavior of Israel Patent Attorneys.  For the draft, see here.

Perhaps the most significant thing about the draft law is that client-attorney privilege is formally recognized. Henceforth, Patent Attorneys will also be required to keep escrow accounts.

The IP Committee of the Israel Bar considers that the standards required of Patent Attorneys should be equivalent to those required of Attorneys-At-Law, and considers that the current state of affairs allows Patent Attorneys more freedom regarding marketing. They have requested that this be addressed. The attorney signed on their proposed response is Ziv Glasner who is also a patent attorney.

The Association of Patent Attorneys in Israel has submitted their comments to the Justice Ministry as an amended draft. Briefly, the Association of Patent Attorneys in Israel would like the code of ethics of patent attorneys to mirror that of the Israel Bar Law (Professional Ethics) 1988 mutatis mutandis, seeing a correlation between the two professions.  Thus the draft law as proposed by the Ministry of Justice recognizes that a patent attorney who is also an attorney-at-law will be duty-bound by both the Code of Ethics that bind patent attorneys and by the Israel Bar Law (Professional Ethics) 1988, however in case of conflict, the behaviour required of Attorneys-at-Law will prevail. In contradistinction, the Association does not see room for conflict between requirements of an Attorney-at-Law and those of a Patent Attorney as it wants the Code of Ethics for Patent Attorneys to mirror that for Attorneys at Law.

If we were talking about ethics, where the standards required of Patent Attorneys and Attorneys at law differ, one would require the attorney to have the highest standards. However, this proposed Law is not about ethics, it is about behaviour.

The proposed law legislates and formalizes much of the voluntary code adhered to by the Association of Israel Patent Attorneys that Dr Kfir Luzzatto drafted some years ago. However, the amendment proposed by the Association of Israel Patent Attorneys wishes to delete certain sections such as not denigrating competitors and not aggressively poaching clients, as these are not currently binding on Attorneys-at-Law. Instead, the Association’s propose to import a whole bunch of clauses from the Israel Bar Law (professional ethics) relating to where Attorneys can set up office and where they can meet clients and make these binding on Patent Attorneys as well.

I am concerned that these restrictions will create an entry barrier against sole practitioners and new firms, and should not be allowed on constitutional grounds based on the Basic Law, Freedom of Occupation 1992. Clearly restrictions designed to protect the public are legitimate. However, I do not think that Read the rest of this entry »


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